The IPKat attended the latest in the Queen Mary IPRI research seminar series on Monday, given by Dr Jennifer Davis of the IP Unit at Cambridge University on “A European Constitution for IPRs? Competition, Trade Marks and Socially Significant Signs”. She began by identifying two possible roles for trade marks: as social and cultural assets and as sources of competition since they can either enhance competition by stimulating innovation or inhibit competition by forming barriers to entry. While pre-1994, UK trade mark law paid heed to the former role by recognising the strong public interest is the prevention of the enclosure of the “trade mark commons”, EU trade mark law has the aim of enhancing free movement and competition within the EU and as a result the courts in applying the new trade mark law find it difficulty to take wider public interest concerns into account. This is largely because they are lacking a language or “discourse” with which to introduce these public concerns, since the concepts applied at the EU level are market-based and serve the interests of establishing and maintaining a frontierless internal market.

The extent to which the new regime takes a neo-liberal “let the market decide” approach is evident from the fact that although a series of public interest exceptions are set out in Articles 3(1)(b)-(d) of Directive 89/104 (for non-distinctive and descriptive marks and marks which have become customary in the trade) these exceptions can be trumped and registration can be obtained where the mark has acquired distinctiveness through use. Jennifer also illustrated the point by reference to the leading ECJ cases on the absolute grounds for the refusal of registration. Although in Windsurfing Chiemsee (place names as trade marks) and Libertel (colours as trade marks) the ECJ recognised that there may be a need to keep such marks free in the public interest, such signs could still be trade marks and would be governed by ordinary trade mark principles for the purposes of registrability, particularly acquired distinctiveness would render them registrable. This was even more apparent in BABY-DRY where the market perception was all-important in that if the market saw the sign as a trade mark then it would indeed be registrable, regardless of any public interest concerns. However, the ECJ has retreated somewhat from that approach in the recent DOUBLEMINT, where it held that certain signs should be kept free for other traders, even if no other traders are currently using the term in question.

Davis concluded by arguing that there is a need to realise that IPRs are more than just economic assets, but for this to happen, the language for looking at wider social concerns must be introduced into the new trade mark law. One way in which this could occur would be if the Member States agreed a statement of first principles based on considerations other than competition.

While the IPKat found it refreshing that Jennifer looked beyond the usual black-letter trade mark principles and is all in favour of limiting the registration of some trade marks both in the public interest (e.g. to guarantee free speech) and in the interests of other competitors on the market, he felt that there were certain unresolved issues. He doubts that the competition-based approach and an approach which considers the public interest are mutually exclusive. Keeping certain marks free for an applicant’s competitors to use ensures that the market remains competitive and delivers all the associated advantages to the public, as well as to the applicant’s rivals. Also, refusing such a mark registration for reasons based on competition will have the same effect as refusing such a mark registration based on broader public interest concerns, even if the reasoning used to reach the decision to refuse registration is different. In fact, there are public-interest safeguards written into the Directive. As well as the relative grounds, there are defences for descriptive use etc (although whether this covers trade mark use is not yet clear), there is the need for use by a defendant to be “in the course of trade” to constitute infringement and there may be a need for a defendant’s use to be “trade mark use” (the issue still isn’t totally clear). Furthermore, public interest terminology has worked its way into ECJ judgements, albeit with a flavour of protecting the interests of competitors despite the lack of an express mandate in the Directive: witness the affirmation of the “keep free” doctrine in Windsurfing Chiemsee and colour depletion theory in Libertel. Most importantly though is the question of what the public interest actually is. Davis seemed to suggest that there was no need for it to be defined in detail. Instead, it was important to recognise in principle that certain marks should be excluded from registration in the public interest, but that this could encompass various interests that could be sorted out in the future. While the IPKat thinks that there is merit in the idea of reserving space for public interest concerns to be played out, unless at least a non-exhaustive attempt at a definition is made, how can be know: (i) that the public interest is worth reshaping the way trade mark problems are argued for; (ii) that the public interest isn’t already adequately protected by the competition-based approach and (iii) what to include in the statement of first principles that Davis suggests?

Commons of note here and here
Save the commons here


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